Diluting Victoria’s Secret – Rebuttable Presumptions on Sex Related Products

The trademark or brand owner of the nationally known Victoria Secret mark sued a small retail store located in Elizabethtown, Ky, called “Victor’s Little Secret” or “Victor’s Secret” for trademark dilution.  Victor’s Secret sold sex toys and sexually oriented products.  Victoria Secret’s brand owner argued that Victor’s Secret was tarnishing disparaging the well known Victoria Secret mark.  In 2003, Victor’s Secret won in the U.S. Supreme Court when that Court held that the Federal Trademark Dilution Act, 15 U.S.C. 1125(c), required a showing of actual dilution.  Mosley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). As a result of this Supreme Court decision, the Congress amended the law in 2006 with the Trademark Dilution Revision Act and changed the statute to provide that a cause of action arises when the use of the accused mark “is likely to cause dilution.”

Upon return to the trial court and again before at the Sixth Circuit Court of Appeals, Victor’s Secret lost when these courts found a likelihood of dilution due to tarnishment.  V Secret Catalogue, Inc. v. Victoria’s Secret Stores, Inc., Case No. 08-5793, May 19, 2010 (6th Cir. 2010).  The appellate court found that there was no likelihood of confusion (common trademark infringement) between the two parties for many reasons (they did not compete with each other), but Victor’s Secret was found to violate Trademark Dilution Revision Act by tarnishing or calling into disrepute the famous and well known Victoria Secret mark.

The 6th Circuit Court of Appeals found “a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex related products is likely to tarnish a famous mark if there is a clear semantic associate between the two.”  Id., slip opn. P. 3. As support, the court cited eight (8) other federal court cases from New York to California and Illinois to South Florida. See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp. 2d 1339 (S.D. Fla. 2001).

In her dissent, Circuit Judge Moore, disagreed with the majority’s establishment of a rebuttable presumption for sex related products and opined that the Victoria Secret brand owner did not prove up a likelihood of dilution.  The brand owner’s evidence consisted of a single affidavit by Army Colonel John E. Baker which stated that his wife and daughters bought Victoria Secret goods and he was dismayed by the association with the small Victor’s Secret retail store in Elizabethtown, Ky.

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